Business Model and Computer Program Will Soon be Patentable in China

We recently received an informational white paper from our agents in China, Lynn Wang and Zhou Jiaxin at NTD Intellectual Property, with news about a change to make software and business methods patentable as long as certain conditions are met.

We felt this information would be valuable to our readers and clients.

Please contact us if you have any questions.

The examples in this article are hypothetical and for illustration purpose only and should not be relied upon for legal advice.


A Break in the Glass Ceiling? Majority of Law Students are Women

For the first time in history, there are more women in U.S. law schools – just over 50 percent of the seats at accredited law schools.

According to The New York Times, a nearly equal amount of men and women have enrolled in juris doctorate programs for several years. However, the American Bar Association recently released data that shows women now make up more than half of those students.

So what does this mean for the profession? Click here to read the entire The New York Times article.

Green Grass and High Tides: The Pennsylvania Medical Marijuana Act

On April 17, 2016, Governor Tom Wolf signed Pennsylvania’s medical marijuana program into law, making it the 24th state with a comprehensive medical marijuana program. The new law – Act 16 or the “MMA” – will protect registered patients and their physicians from civil and criminal penalties and is in the process of creating a regulated system for growing, prescribing and selling medical marijuana.

The law was effective in April, but the Department of Health is in the process of issuing regulations to implement the Act.

Predictably, Pennsylvania employers now have another issue with which to wrestle in the workplace.

Click here to read the entire article.

By Kevin L. Carr



Ornamental Features, Apple and Samsung: The Reverse of the $400M Verdict

The Supreme Court has stepped into the Apple and Samsung argument by reversing a $400 million verdict.

According to Bloomberg, “The U.S. Supreme Court gave Samsung Electronics Co. its first good news in a while on Tuesday, reversing a nearly $400 million verdict against it for infringing on Apple Inc.’s iPhone patent. The holding was narrow, and the justices sent the case back to the appeals court to figure out what the correct damages should be. But the thrust of the opinion was that damages could be computed based on the profit Samsung made from specific infringing features of the phone — not based on the overall profit from all sales of infringing smartphones.

The case is the latest in a string of decisions over the past several years in which the Supreme Court has rejected rulings by the U.S. Court of Appeals for the Federal Circuit, which specializes in patent law, among other things.”

According to William P. Smith, Counsel at Spilman Thomas & Battle who practices patent law and intellectual property law, “Design patents protect only the ornamental features of a product, which traditionally has been a very narrow scope of protection.  The lower court decision in Samsung appeared to have broadened the scope of design patent protection.  Now the Supreme Court reversal, while leaving intact the lower courts’ scope of protection, may ultimately limit the damages that may be recovered for infringement of a design patent.”

Click here to read the entire Bloomberg article.




Correction – Let’s Amend This Trademark: Part Five of Our Trademark Series

In our previous four articles (articles 1, 2, 3 and 4) in our trademark series, we discussed mandatory and optional filings for maintaining and protecting your marks, in order to avoid abandonment or cancellation.

The final segment of our trademark maintenance series provides guidance on corrections and amendments to trademark registrations.

Click here to read the entire article at

By William P. Smith




Your Trademark on Steroids – Making Your Trademark Registration Stronger

In our previous articles (part one, part two and part three), we discussed ways in which trademarks are maintained and protected through filings that are mandatory and which filings would result in abandonment or cancellation if not timely submitted.

There are also optional filings a trademark owner can take advantage of to optimize and secure its rights under a U.S. trademark registration. An Affidavit of Incontestability Under Section 15 is one such method. Once registered on the Principal Register, if a mark has been in continuous use for at least five consecutive years, the owner may submit a Declaration of Incontestability, also referred to as a Section 15 Declaration or Affidavit. Incontestability offers several advantages. Specifically, third parties can no longer challenge either registrant’s ownership of the trademark or the validity of the mark itself on the basis that it is merely descriptive of the goods or services or was improperly registered.

One may file a Section 15 Declaration any time after the five-year continuous use. While the Affidavit may be filed separately, it is commonly combined with the six-year Declaration of Continued Use under Section 8. The United States Patent and Trademark Office (“USPTO”) does not acknowledge a Section 15 Affidavit unless a use affidavit is pending or has been accepted. The USPTO confirms that the Section 15 filing is facially sufficient and then updates the registration record to reflect receipt of the Section 15 Declaration. It does not review Section 15 filings for substantive issues. Therefore, whether the registration is actually incontestable is determined only if the mark is challenged in a court or administrative proceeding before the Trademark Trial and Appeals Board (“TTAB”).

The Section 15 Affidavit (or declaration) must be filed along with a filing fee (currently $200), and submitted by the owner of a trademark registration after the mark has been in continuous use in commerce for at least five consecutive years after the date of registration. It must specify the goods or services with which the registered mark has been in continuous use for at least five consecutive years after the date of registration. If some but not all of the associated goods qualify at the time of filing, the trademark owner can file more than one Section 15 Affidavit at different times to cover different goods or services, The declaration must state:

  1. The mark is still in use in connection with those goods or services,
  2. There has been no final decision adverse to the owner’s claim of ownership of the mark for the covered goods or services; and
  3. There is no proceeding involving these rights pending in the USPTO or in a court and not finally disposed of.

If you have any questions about trademark or patents, please feel free to contact us.

By William P. Smith


Spilman Attorneys Recognized by 2016 Pennsylvania Super Lawyers

We are pleased to announce that attorneys Sally E. Edison and Ronald W. Schuler have been selected to the 2016 Pennsylvania Super Lawyers list, and Barry A. Naum has been selected to the 2016 Pennsylvania Super Lawyers Rising Stars list.

The objective of the Super Lawyers selection process is to create a credible, comprehensive and diverse listing of outstanding attorneys from more than 70 practice areas that can be used as a resource to assist attorneys and consumers in the search for legal counsel. The methodology includes a statewide nomination process, peer review by practice area and independent research.

Edison practices law in the areas of commercial bankruptcy, insolvency and creditors’ rights. Her clients primarily include national trade creditors and major corporations. Her decades of experience, along with her commitment to the community and dedication to the advancement of diversity in the legal profession, have made her a sought-after speaker and garnered her significant state and national recognition for her professional excellence and leadership.

Schuler, who serves as Member in Charge of Spilman’s Pittsburgh office, is a corporate, securities and commercial transactions lawyer with extensive experience in mergers and acquisitions, public offerings, and private placement financings in the energy, software, biotechnology and telecommunications industries. He served as a chief operations executive of a $100+ million oil and gas company before joining Spilman in 2009.

Naum, who serves as Counsel in Spilman’s Harrisburg-area office, focuses his practice in the areas of utilities, energy and communications law. He represents and counsels various large commercial and industrial clients in these areas. He earned his undergraduate degree, cum laude, from Malone College and his law degree from The Ohio State University Moritz College of Law. He is admitted to practice law in Pennsylvania.



Sally E. Edison


Ronald W. Schuler

BarryNaum cropped

Barry A. Naum

The Golden Triangle Remains Golden and is Growing

The Pittsburgh Downtown Partnership has issued their latest report and the news is good.  According to the State of Downtown report, new development is occurring and going beyond the “golden triangle.”

In 2015, the city saw $636 million in new projects, which is an increase of 21 percent since 2014. The growth is mainly being seen in the North Side and Strip District, which are just outside of the Central Business District.

In addition, there is a wave of real estate inventory coming to the downtown region with:

  • 1.4 million square feet of office space,
  • 761 new hotel rooms and
  • 1,380 residential units

The report notes that the residential population has continually increased, competitive hotel room rates have remained steady and average Class A office rents reaching an all-time high of $27.70 per square foot.

Click here to read the entire Pittsburgh Business Times article.


Save Your Energy – Pittsburgh Tops the List Again

The Pittsburgh 2030 District has something to brag about. This initiative, created by the Green Building Alliance, aims to cut energy, water and transportation-related emissions by the year 2030. Pittsburgh has 438 participating buildings, at a total of 68.2 million square feet. The Steel City joined the challenge in 2012 and makes up the largest 2030 District of 12 participating cities in the country.

Pittsburgh’s 2030 buildings reduced energy use by 12.5 percent, water use by 10.3 percent, and transportation emissions by 24.2 percent. The latter exceeds the 2020 goal of 20 percent.

Accordingly, the city is on track to hit each five-year marker.

What other cities are participating? Read the Pittsburgh Post-Gazette article now.


U.S. Natural Gas Production – The Good News Is…..

The Marcellus Shale and Pennsylvania led the way in U.S. natural gas production in 2015. According to the U.S. Energy Information Administration, Pennsylvania had record daily average figures last year with 79 billion cubic feet produced per day – up five percent from the year prior. Pennsylvania was the second highest gas producing state with Ohio and West Virginia coming in closely behind.

Unfortunately, the state’s 2015 growth was less than the growth reported in 2014 over 2013. Drops in natural gas prices and cutbacks in rigs and employment led to a decrease in growth in the Marcellus and everywhere else. Some positive news – overall production is trending upward.

Click here to read the entire Pittsburgh Business Times article.